Chile is renegotiating its free trade agreement with the European Union, which will have an impact on the legal framework governing IP rights in the country; negotiations are ongoing, although no date for their conclusion has been announced. The country is also revising its existing IP law and seeking to usher in changes that include the possibility of submitting provisional patent applications, which would provide applicants with a term of 12 months in which to file the corresponding definitive application. The introduction of a ‘patent usurpation act’ has also been proposed, whereby if a patent were to be wrongfully held by a third party, the legitimate owner could request its transfer and recover damages accordingly.
- Sargent & Krahn
- Albagli Zaliasnik SpA
- Claro y Cia
- Johansson & Langlois
- Villaseca Abogados
- Baker McKenzie
- Beuchat, Barros & Pfenniger
- Porzio Rios Garcia
Albagli Zaliasnik SpA
Albagli Zaliasnik acquits itself with distinction in the life sciences field, marrying high-level skills in pharmaceutical patent litigation with deep regulatory expertise. Recent highlights include representing Abbott Laboratories in a commercially consequential patent infringement dispute against Bayer regarding oral contraceptives. “Tough but fair” litigators Eugenio Gormáz, Ariela Agosin and Daniel López linked up to form a potent team for Abbott on this one. Serving as its director, Gormáz has led the IP group through a recent period of growth that has seen an increase in headcount and expansion into areas such as data privacy. Agosin wins praise for her “clarity of thought and intelligence”; while López adds value with his abundant competition and regulatory law knowledge. Overall, “the team’s responsiveness and excellent communication inspire great confidence”.
Alessandri is a repository of trust for many international blue-chip companies – it maintains a laser focus on quality and has an excellent track record of results in difficult cases, thanks to its multidisciplinary approach and technical dexterity. Recently, the team has showcased its talent for persuading examiners at the National Institute of Industrial Property (INAPI), overcoming first instance rejections to applications to secure protection for Hewlett-Packard and others. The set also enjoys an enthusiastic following among domestic entities and has been working closely with the Universidad de Chile through all phases of the prosecution process. IP group manager Rodrigo Velasco Alessandri and head of patent prosecution Francesca Rodríguez Spinelli bring strong leadership to the practice. Velasco Alessandri shines for his business-minded approach to diverse IP matters, while Rodríguez Spinelli stands out for her specialisation in patents, plant varieties and designs. The pair have recently been representing Codelco in a high-profile cancellation action against a patent protecting the rescue capsule used in 2010 to save 33 miners trapped in the San José mine; they were also behind a recent success for Hewlett-Packard. Another key contact is Santiago Ortúzar, who “handles complex matters deftly while getting good results quickly” in both prosecution and litigation. Newly featured in the IAM Patent 1000 this year is Rodrigo Valenzuela, a rising star on the Chilean market with wide-ranging IP know-how and US experience.
Baker McKenzie is a reliable choice in Chile for patent search, prosecution and infringement counselling services; the local branch maintains the high standards that the organisation sets for itself globally. The local partner in charge on the IP side is Valentina Venturelli, who is endorsed for her “clear understanding of the law as well as the business interests of her clients”. She is a perfect fit for those with diverse portfolios, due to her “ample experience across the spectrum of intellectual property, and not just in patents”. In prosecuting before INAPI, she has an unerring instinct for how best to finesse applications to overcome examiner rejections.
Beuchat, Barros & Pfenniger
Long-standing IP boutique Beuchat, Barros & Pfenniger continues to score high grades for the quality of its patent offering. Its seasoned practitioners bring an attentive, personalised approach to proceedings and excel not just at protecting clients’ innovations, but also at furthering their business objectives in Chile through the judicious use of IP tools. As managing partner, Andrés Melossi Jiménez sets the tone from the top: “Andres is exceptionally able in drafting applications and highly skilled at minimising the risk of rejection.”
Chile’s largest law firm, Carey maintains a phenomenal patent practice staffed by a sizeable team of practised IP specialists, many of whom have industry or INAPI examiner backgrounds. The set handles approximately one-fifth of all patents filed in Chile each year and is routinely sought out for representation in the country’s most complex patent litigations; the scale of the practice prompts commentators to enthuse: “It can finish in weeks projects that would take other firms months.” The guiding lights are Guillermo Carey and Francisco Carey, both of whom earn glowing praise from the market. “Guillermo’s experience and knowledge are unbeatable. He sees the big picture and dispenses invaluable strategic advice while providing a highly attentive service. It is always a pleasure and privilege to work with him.” “Francisco provides outstanding assistance and is incredibly committed to his clients. He is someone you can trust your portfolio to, knowing he will exceed expectations in terms of service, proactivity and cost effectiveness.” Another key figure is counsel Fernando García, a repository of trust for life sciences companies as they navigate thorny IP and regulatory matters. Collectively, the group is “diligent, creative, flexible and passionate”, and does a wonderful job “injecting good business sense into recommendations”.
Having recently turned 140 years old, ClarkeModet is a venerable presence in the region, with an extensive network operating across 10 Latin American jurisdictions. The Santiago outpost has a carefully cultivated reputation for the protection of pharmaceutical and mechanical patents, with able support provided by highly trained in-house technical experts; when faced with patent office rejections and other difficulties, the team can stay the course to drive the best possible outcomes for clients. The firm’s service capability extends beyond prosecution into litigation, as well as more business-focused consulting on IP asset valuation and other subjects. Calling the shots is managing director Ignacio Mattar.
Claro y Cia
Claro y Cia has an enduring name as a highly sophisticated provider of commercial legal services – and it is a name that the firm’s IP lawyers do their utmost to uphold. Steeped in pharmaceutical, biotechnology and mining know-how, its patent stars effortlessly dispatch both prosecution and litigation briefs, taking advantage of top-drawer IT and workflow systems to render a highly efficient service. Taking the reins is Felipe Claro, an eminent professional distinguished by his profound legal insight and commercial and strategic prescience; he “consistently stays ahead of the curve” in terms of the legislative, policy and business developments that impact on his clients. Supporting him while leading on prosecution is associate Trinidad Rojas, one of the brightest rising stars of Chilean IP practice.
Johansson & Langlois
This IP specialist’s six-lawyer, six-engineer team provides a streamlined, flexibly priced service to a colourful catalogue of domestic and international innovators. Highly effective at identifying and executing holistic solutions to clients’ IP problems, thanks to its well-rounded patent, trademark, design and copyright expertise, the group can cover a lot of ground for those with diverse portfolios. The patent team is home to crack specialists in the mechanical, chemical and electrical arts, and can satisfy the demands of companies from virtually any sector. The architect of the firm’s thoughtful, tailored approach to service is Felipe Langlois, a hugely experienced partner with enviable international connections, which come in handy for those seeking multi-jurisdictional protection. Also recommended is Marcela Ramírez, a former examiner who knows what will pass muster at INAPI. Recent developments for the group include an increase in domestic filings on behalf of local inventors and universities – with which it has longstanding ties – and heightened activity in the telecommunications sector.
Porzio Rios Garcia
Although it has expanded its sphere of operations since being established in 1993, Porzio Rios Garcia continues to live and breathe intellectual property, its foundational practice area. Its well-educated, seasoned lawyers are backed by a team of first-rate technical and scientific experts and an efficiently functioning administrative staff, enabling the firm to guide strategy and seamlessly sew up patent protections. Partners Marcelo Correa and Cristóbal Porzio are key contacts, alongside founding partner Marino Porzio.
Sargent & Krahn
Storied firm Sargent & Krahn is the destination of choice for a coterie of top international companies such as Syngenta, Genentech and Incyte Holdings, all of which it has recently successfully represented before the Industrial Property Court with respect to patent term adjustment requests. These and many other companies enjoy sophisticated, commercially informed counsel alongside easy access to a fantastic network of foreign correspondents and all the technical expertise they could wish for. Spearheading the offering are partner in charge Juan Pablo Egaña and senior associate Cristián Barros, a dynamic duo who have recently been adding value for clients by advising on key legislative developments. They are hailed as “excellent allies to have, given their deep legal knowledge and keen, up-to-the-minute understanding of industry trends and the impact changes in the law could have on business”. Special commendations go to Egaña, who is “matchless as a judicious, articulate and dedicated lawyer”.
A reliable guide at all points of the patent lifecycle, Silva ranks highly on the filing charts thanks to its close relations with top universities, domestic innovators and multinationals. Its academic following is particularly substantial, as a result of which it has cultivated striking expertise in technology transfer and IP commercialisation. Another hallmark of the practice is its ability to cater to clients’ every patent need across Latin America – it is a preferred gateway to the region and does a sterling job coordinating cross-border protection efforts. It also maintains a strong focus on domestic affairs: for example, it handles Gilead’s antiretroviral and antiviral drugs portfolio in Chile, with Rodrigo León and Sebastían Alvarado taking the lead on this. Partner León is called on by companies and universities not just to opine on discrete patent matters, but also to set their entire patent agendas and policies, such is his wisdom in the space. Alvarado is an ace on prosecution and international portfolio management, as well as licensing and other transactions. Another unique selling point of the firm is the depth of its regulatory expertise; standing out in this regard is Francisco Silva, a favourite of pharmaceutical and healthcare companies.
Villaseca has a lengthy track record of success in patent practice on both sides of the contentious/non-contentious divide. The invaluable assistance it provides to university clients in building and maintaining strong, coherent patent portfolios is a notable thread in the firm’s recent narrative, and one spun chiefly by Loreto Vera, an acknowledged plant varieties authority. On the litigation frontline, meanwhile, is head of patents Eduardo Molina – a clever tactician with a finely tuned commercial sense who knows how to get patents to grant and then enforce them in court.
Other recommended expertsBest known for his plant varieties expertise, Juan Alberto Diaz Wiechers is a versatile IP professional who dispatches both patent and trademark matters with alacrity. The business-minded practitioner runs his own self-titled law office. Flying the flag at SCR Abogados is Juan Francisco Reyes, a client service award winner who impresses for his blend of IP, regulatory and data privacy know-how. He is also an authority when it comes to alternative dispute resolution.
- Ariela Agosin - Albagli Zaliasnik SpA
- Francisco Carey - Carey
- Guillermo Carey - Carey
- Felipe Claro - Claro y Cia
- Juan Pablo Egaña - Sargent & Krahn
- Felipe Langlois - Johansson & Langlois
- Rodrigo Velasco Alessandri - Alessandri
- Sebastian Alvarado - Silva
- Cristián Barros - Sargent & Krahn
- Juan Alberto Diaz Wiechers - Diaz Wiechers SA
- Fernando García - Carey
- Eugenio Gormáz - Albagli Zaliasnik SpA
- Rodrigo León - Silva
- Daniel López - Albagli Zaliasnik SpA
- Andrés Melossi Jiménez - Beuchat, Barros & Pfenniger
- Eduardo Molina V - Villaseca Abogados
- Santiago Ortúzar - Alessandri
- Marcela Ramírez - Johansson & Langlois
- Juan Francisco Reyes - SCR Abogados
- Francesca Rodríguez Spinelli - Alessandri
- Trinidad Rojas - Claro y Cia
- Francisco Silva - Silva
- Rodrigo Valenzuela - Alessandri
- Valentina Venturelli - Baker McKenzie
- Loreto Vera C - Villaseca Abogados